When Does a Likelihood of Confusion Between Trademarks Exist?

The likelihood of confusion between trademarks is a central concept in trademark law that ensures consumers are not misled and businesses are protected from unfair competition. Confusion exists when the similarity between two trademarks could lead the public to believe that the goods or services come from the same company or from economically linked companies. This article explains the various factors involved in assessing the likelihood of confusion between trademarks, with numerous examples for illustration.

Legal Basis for the Likelihood of Confusion

The likelihood of confusion is regulated in European trademark law, particularly by Article 8(1)(b) of Regulation (EU) 2017/1001 on the European Union trademark and Section 14(2)(2) of the German Trademark Act (MarkenG). These provisions stipulate that a trademark cannot be registered or its use can be prohibited if, due to its similarity to an earlier trademark and the similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public.

Section 14 MarkenG – Rights Conferred by a Trademark

Section 14 MarkenG regulates the rights of the trademark owner and specifically the claims that arise from an infringement of these rights. The likelihood of confusion is particularly addressed in paragraph 2:

Section 14(2) MarkenG: “It shall be prohibited for third parties, without the consent of the proprietor of the trademark, in the course of trade to use in relation to goods or services:

1. a sign which is identical with the trademark in relation to goods or services which are identical with those for which the trademark is protected;
2. a sign where, because of its identity with or similarity to the trademark and the identity or similarity of the goods or services covered by the trademark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark.”

This provision defines the likelihood of confusion as the possibility of confusion due to the identity or similarity of the trademarks and the goods or services concerned.

Other Relevant Provisions

In addition to Section 14 MarkenG, other provisions of the MarkenG are also relevant for assessing the likelihood of confusion:

• Section 15 MarkenG: Protection of Commercial Designations – This provision extends protection to business designations and commercial designations, which should also be protected from confusion.
• Section 42 MarkenG: Opposition to Registration – This provision allows the owners of earlier trademarks to oppose the registration of new trademarks if there is a likelihood of confusion.
• Section 51 MarkenG: Invalidity Due to Earlier Rights – This provision allows the invalidation of a registered trademark on the basis of earlier rights, including a likelihood of confusion.

Economic Importance of the Likelihood of Confusion

The economic importance of the likelihood of confusion is significant, as trademarks are not only legally but also economically highly relevant. Confusions can lead to loss of sales, market share, and a negative impact on brand image. A strong trademark is a valuable asset, and avoiding confusion is crucial for the long-term economic success of a company.

Criteria for Assessing the Likelihood of Confusion

The assessment of the likelihood of confusion is based on a comprehensive evaluation of all relevant factors. Case law has developed a variety of criteria, which are explained below.

1. Similarity of the Trademarks

a. Phonetic Similarity

Phonetic similarity plays an important role, especially when trademarks are communicated verbally, such as in radio advertising or word-of-mouth recommendations. A high degree of phonetic similarity can be sufficient to establish a likelihood of confusion, particularly if the goods or services are identical or similar.

Example: The trademarks "Sali" and "Salli" have a high degree of phonetic similarity, as they differ only by one letter and can therefore be easily confused.

b. Visual Similarity

Visual similarity is particularly relevant when considering trademarks used in written form, such as on packaging, in print media, or on websites. This involves the overall impression, the length of the trademark words, and similarities in individual letters or word parts.

Example: The trademarks "Milka" and "Mika" are visually similar, as they share the same initial letter and a similar combination of letters.

c. Conceptual Similarity

Conceptual similarity is assessed when trademarks use terms that have a similar meaning or evoke associations. This similarity can cause confusion, even if the trademarks are phonetically and visually different.

Example: The trademarks "Löwenbrau" and "Löwenbräu" are conceptually similar, as both contain the term "Löwe" (lion) and refer to beer products.

2. Similarity of Goods or Services

In addition to the similarity of the trademarks, the similarity of the goods or services is also decisive. The more similar the goods or services are, the less similar the trademarks need to be to establish a likelihood of confusion.

a. Identical Goods or Services

If the goods or services are identical, the threshold for assuming a likelihood of confusion is lower. Even minor similarities in the trademarks can be sufficient to assume a likelihood of confusion.

Example: The trademarks "Apple" for computers and "Aple" for computers have a high likelihood of confusion due to the identity of the products.

b. Similar Goods or Services

For similar, but not identical goods or services, the likelihood of confusion is assessed based on the similarities and differences in the product range and distribution channels.

Example: The trademarks "Nivea" for skincare products and "Niveo" for hair care products could establish a likelihood of confusion, as both are in the field of personal care.

3. Distinctive Character of the Earlier Trademark

The distinctive character, i.e., the distinctiveness and degree of recognition of the earlier trademark, influences the assessment of the likelihood of confusion. Trademarks with high distinctiveness enjoy a broader scope of protection.

a. Strong Distinctive Character

Trademarks with strong distinctive character, such as well-known or renowned trademarks, have a broader scope of protection as they are firmly anchored in the minds of consumers.

Example: The trademark "Coca-Cola" has a strong distinctive character, which is why even similar trademarks like "Koka-Kola" can establish a likelihood of confusion.

b. Weak Distinctive Character

Trademarks with weak distinctive character, such as descriptive or commonly used terms, have a narrower scope of protection. Here, the similarity of the trademarks and the goods or services must be more pronounced to establish a likelihood of confusion.

Example: The trademark "Bäckerei Müller" for a bakery has weak distinctive character because it consists of descriptive elements. A likelihood of confusion with the trademark "Bäckerei Meier" would therefore be less likely.

4. Overall Impression of the Trademark

The assessment of the likelihood of confusion is always based on the perspective of the average, reasonably well-informed, observant, and circumspect consumer. The overall impression that the trademark leaves on the consumer is decisive.

a. Dominant Components

Individual components of a trademark can dominate the overall impression and significantly influence the perception of the trademark.

Example: If the component "Max" dominates in the trademarks "MaxShop" and "MaxStore", there could be a likelihood of confusion, even though the endings are different.

b. Trademark Components as a Whole

It is important to consider the trademarks as a whole and not to evaluate individual components in isolation.

Example: The trademarks "Sunshine" and "Moonshine" are sufficiently different in their overall impression, despite the common component "shine", to exclude a likelihood of confusion.

Practical Tips to Avoid Likelihood of Confusion

1. Comprehensive Trademark Search: Before registering a trademark, a comprehensive search should be conducted to ensure that no similar or identical trademarks already exist.
2. Engaging Trademark Experts: Consulting with trademark law experts can help identify potential risks of confusion early and avoid them.
3. Careful Selection of Trademark Components: Choosing unique and distinctive components can minimize the risk of confusion.

International Aspects of the Likelihood of Confusion

For companies wishing to protect their trademarks globally, it is important to consider the international aspects of the likelihood of confusion. Differences and similarities in trademark law across various countries, as well as international treaties and agreements, play an important role. The WIPO (World Intellectual Property Organization) offers mechanisms for the international registration of trademarks, which can facilitate a comprehensive protection strategy.

Procedures for Trademark Registration and Opposition

A detailed overview of the procedures for trademark registration and opposition could be added. This includes practical steps and deadlines, as well as the process for filing an opposition.

Common Pitfalls and Frequent Mistakes

Companies should be aware of common mistakes and pitfalls to avoid them. This includes the use of descriptive terms, insufficient research, and inadequate monitoring of the trademark.

Examples from Practice

Case 1: "Lufthansa" vs. "Luftansa"

Deutsche Lufthansa AG sued for the use of the trademark "Luftansa" for a travel company. The court found a likelihood of confusion, as the two trademarks are phonetically and visually very similar and operate in the same industry. The slight difference in spelling was not enough to exclude a likelihood of confusion.

Case 2: "Bürger" vs. "Bürgerhof"

Another example is the dispute between the trademark "Bürger" for food products and the trademark "Bürgerhof" for similar products. The court saw no likelihood of confusion here, as the additional component "hof" had sufficient distinctive character, and the overall impression of the two trademarks was different.

Case 3: "Canon" vs. "Canonica"

The trademark "Canon" for cameras and printers sued for the use of the trademark "Canonica" for similar products. The court found that the phonetic and visual similarity was high and that the distinctive character of the trademark "Canon" was strong enough to establish a likelihood of confusion. The slight deviation in spelling was deemed insufficient to exclude a likelihood of confusion.

Conclusion

The assessment of the likelihood of confusion between trademarks is a complex process that requires a comprehensive evaluation of all relevant factors. Phonetic, visual, and conceptual similarities of the trademarks, the similarity of the goods or services, the distinctive character of the earlier trademark, and the overall impression play a central role. Numerous examples from practice illustrate how differently courts can decide in individual cases. For companies, it is therefore crucial to conduct thorough research and assessment of the potential likelihood of confusion during the trademark development and registration process to avoid costly legal disputes.

Our law firm is at your disposal with our expertise in trademark law and supports you in the examination and registration of your trademark as well as in the defense of your trademark rights.